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So far as the requirement of inventive step is concerned, s.7 of the Patent Act stipulates that
"an invention shall be taken to involve an inventive step if it is not obvious to a person ordinarily skilled in the art."
In considering the basic conditions for patentability, it must be realised that novelty, and the inventive step, are cleary different from each other. While the former involves a distinctive comparison between the alleged invention and the existing state of the art, the latter requires an appraisal of the degree of improvement of the claimed invention from the invention that preceded it. The main aim of patent law seems to center on balancing the conflicting interest for the betterment of society. The patent protection would be exclusively provided to an invention, which has a quality worthy of such legal privileges. Monopoly privileges should not be conferred on something which is only the result of logical thinking or simple combination. The inventive step requirement ensures this objective.
To be considered whether or nor it involves an inventive step, the claimed invention must be novel. When the first requirement is satisfied, the inventive step is a further condition which the invention must fulfil to prove its merit. Unlike the novelty, the test of inventive step is subjective, and seems to be more difficult. To have a clear view to this requirement, it is necessary to assess the inventive step in objective ways.
The evaluation of inventive step is focussed on qualitative distinction of the claimed invention and the existing inventions in the same field. An invention possesses an inventive step if it is not technically or practically obvious, with respect to the state of the closest art, in the view of a skilled person. For the purpose of assessment of inventive step in an objective way, one must put himself in the position of a skilled man, being deemed to have the common general knowledge in that field, at the filing date or the priority date. If such a man is unable to come up with the same result, the invention is not obvious and may be patentable.
A person skilled in the art may be described as a man or a team of persons who is reasonably skillful and familiar with the field of the claimed invention. The skilled person must be able to know the development in the field by his original knowledge or his capability to search for it, but he does not have an innovative capacity as to alleged invention.35
However, there is no universal criteria for the "person skilled in the art." The skill of such a person is dictated on a case-by-case basis, depending on the level and technological features of the invention. In Thailand and other developing countries, however, this determination could be different from that of developed countries. It is a question of how a person ordinarily skilled in the art can be determined and what kind of person should be regarded as a person skilled in the art, particularly in the field of technology that lacks indigenous technolo-gical personnel.36
Where the person skilled in the art in developing countries is dictated by a skillful person available in that country, the standard of the inventive step test can be lower than that of developed countries. By applying its own standard of the person skilled in the art, a developing country may grant a patent to an invention, that has been rejected, or would be rejected, by the Patent Office of another country on the ground that the invention is obvious in the view of a person skilled in the art in that country.
In addition, to be considered as involving an inventive step, an invention must possess a certain degree of improvement on existing knowledge. This condition may be to rigid, and posses an obstacle to effective competition by small enterprises in developing countries with multinational foreign firms. While multinational companies can afford to pace up their R&D activities, indigenous firms are not in that position. As pointed out by Litman, "to overcome the creativity bar, a small competitor must exhaust itself by inventing around technologically advanced patents or coming up with odd-ball and often useless inventions."37
Since Thailand is not bound to treat Thai inventors and foreigners on an equal basis as is required by the principle of national treatment, some sort of discrimination may be adopted, at least theoretically. This can be done by providing favourable treatment to local competitors. While claimed inventions from abroad will be required to prove their non-obviousness, the inventive step requirement can be waived for Thai nationals, or only for domestic firms operating in very competitive sectors such as chemical and biotechnology.
However, the basic difficulty in implementing this proposal will be the lack of political will by developing countries, including Thailand. To the extent that the Thai economy is vulnerable and technologically bankrupt and it depends on developed countries in may respects (i.e. export markets, financial aids, technology acquisition, direct investment, etc.), the unequal treatment proposed here seems to be unworkable in practice.
Another option is to introduce the patent-like protection of utility model into the present law. The utility model, which grants a shorter term of protection but with a lesser degree of inventive step, may be advantageous for small enterprises in developing countries. An example is shown in the People's Republic of China, where there were 33,157 applications for utility models filed by local inventors or 73% of the total demestic applications in 1991. In the same year, the number of utility models granted to demestic applicants was 17,200,which waw 13 times higher than that for patents.38
The third condition for patentability in Thailand is that a patentable invention must be capable of industrial application.39 This requirement in most patent systems has an aim to enhance the industrial and economic progress in terms of the application of new technology in practical means. In addition to being new and having an inventive step, an invention must provide some useful function to respond to the need of society.
The standard of "industrial application" under the Thai law must be interpreted in the broadest possible way.40 The term includes not only the making or using of the invention in industrial and agricultural activities, but also the application of the invention to handicrafts and commerce.
The concept of applicability to industry means that the law does not protect information per se, regardless of how excellent it is. New and improved result is not enough. The technical information would be worthy of legal protection only when it could be industrially exploited. The invention will be regarded as capable of industrial application if it is useful in practice. In other words, if it is product, it could be made. If it is a process, it must be able to produce a concrete effect.41
The industrial applicability seems to encourage those in both public and private sectors, involved in inventive activities, to focus their R&D activities on applied research, rather than basic or pure research which produces only scientific theories and concepts. This requirement, therefore, may not be advantageous to developing economics whose public and private inventors do not possess adequate technical capability and basic knowledge in the field of technology. By shifting their local R&D from pure research to applied research without an appropriate background, there can be no doubt that the objective of developing countries for acquiring modern technology will reach minimal success.
35 Phillips, J. and Alison Firth. Introduction to Intellectual Property Law, Butter-worths, London. 1990.p.44
36 Wegner, op.cit, at. P.161
37 Litman, G.V.,Note: Reinventing a law on Inventions: International Aspects of the New Russian Patent Law, George Washington Journal of International Law & Economics, Vol.25, 1991, p.194 footnote 138.
38 Xintian, Y., The Newly Revised Chinese Patent Act-A Brief Introduction, IIC. Vol.24 No.2, 1993,p.192.
39 Patent Act B.E.2522, s.8.
40 See WIPO, WIPO Model Law for Developing Countries on Inventions, at p.61
41 Phillips and Firth, op. Cit., at p.50